A Strategy for International Protection of Your Brand

An international trade mark strategy is vital to all businesses from start-ups to large multi-national organisations. Emma Lambert outlines the best options for protecting brands internationally and considers their particular strengths and weaknesses.

Overview

The value of Intellectual Property (IP) is being recognised by governments worldwide - so too is the need for international agreements governing the protection and use of IP. Administrative bodies such as the UN's World Intellectual Property Organisation (WIPO) and the World Trade Organisation (WTO) have specifically been developed to support international trade and to promote reciprocity of IP recognition and protection between nations.

These organisations are responsible for bringing conventions and agreements into force that can be joined by countries willing to integrate them into their national laws and recognise the IP rights of other signatory nations. Membership of these conventions and agreements can lead to considerable economic benefits as companies are more likely to consider member countries as suitable trading territories and venues for the manufacture and distribution of their brands. Interestingly enough, the Paris Convention for Protection of Industrial Property 1883 (the Paris Convention) came about as a result of companies refusing to attend an exhibition of inventions, trade marks and industrial designs in Austria-Hungary. This was because the protection afforded to international rights holders in Austria-Hungary was considered to be inadequate.1

Ultimately, a clear understanding of the agreements, conventions and bodies governing international IP will assist brand owners and their advisers to develop an effective worldwide brand strategy. November 2003 saw the United States join the Madrid Protocol and, in the field of patents, the UK Patents Bill (published 16 January 2004) is set to change existing UK patent law and bring it into line with the European Patents Convention (revised in 2000). These events are clear indicators that IP legislation is under constant review on an international scale.

The IP strategy considered in this article is restricted to brands / trade marks. The author examines four methods of protecting your brands: some have developed from WIPO governed agreements - the Madrid Protocol 1989, the Madrid Agreement 1891 and the Paris Convention; others through Council Regulation (EC) No 40/94 - which introduced the Community Trade Mark - and the UK Trade Marks Act 1994.